info@symbiosisip.co.uk

Changes to UK Intellectual Property Office (UKIPO) Patent Practise

Author: Dr Julie Myint | julie@symbiosisip.co.uk

1 Dec 2020

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The address for service for the purpose of corresponding with the UKIPO and also for the purposes of proceedings under IP legislation must be an address within the UK[1] from 1 January 2021.

It can be a home or business address or the address of your attorney or representative.

Prior to the 31 December 2020, Applicants filing a patent application were able to use an address in the UK or the European Economic Area (EEA). However, on 1 January 2021 the UKIPO’s rules on address for service will change and Applicants will need an address in the UK, Isle of Man, Gibraltar or the Channel Islands (for brevity ‘the UK’) before the UKIPO will consider an action. This means an address in the EEA will no longer be accepted.

Notably, the UKIPO is not changing the way it processes any forms or changing any procedures.

Defending and Challenging rights

Granted patents may be challenged by revocation and/or invalidity proceedings. If your patent right is challenged, on or after 1 January 2021, and your address for service is outside the UK, you will need to provide an address in the UK to engage in those proceedings. If you do not do this then the proceedings against you could succeed (without your involvement) and you could lose your patent right.

If you wish to challenge a granted UK patent, you must provide an address for service in the UK.

European Patents

Granted European Patents which designate the UK are transferred onto the UK Register automatically. They are transferred with the Applicant’s details only, as the UKIPO must receive authorisation/power of attorney (Form 51) before it can recognise any representative. This is current practice and will not change. This is the case even if your European Patent had the address of a UK representative who acted for you at the European Patent Office.

From 1 January 2021 if you wish to appoint a representative for the UK granted part of your European patent application, the representative will need to have an address in the UK.

Exceptions

However, you will not need a UK address to renew a granted UK patent or a EP(UK) granted patent. This is in line with the current renewal arrangements which do not require a valid address for service.

Further, for actions started before 1 January 2021 and still ongoing, if you have used an EEA address for service you will not need to change your address for a UK address to conclude them. This includes proceedings such as:

•             oppositions

•             invalidations, or

•             revocations

•             a hearing

•             an extension of time, or

•             a request to divide an application

If you need to change your EEA address during any such ongoing proceedings, you may change it to another EEA or UK address.

If you need to change your UK address during any such ongoing proceedings, you will need to provide a replacement address in the UK, i.e. an EEA address cannot be appointed.

If you filed a new application before the 1 January 2021 you can retain your EEA address. However, as mentioned above, if a proceeding is initiated against your patent right on or after 1 January 2021, a UK address for service will subsequently be required.

If you make a request after 1 January 2021 to divide an application which you filed before 1 January 2021, the new divisional application will be able to retain the same address for service as the original application.

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